USPTO Patents Application 10597633

PATENT COOPERATION TREA

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From the

INTERNATIONAL SEARCHING AUTHORITY

To

* ^ nPT.IO A nOA

PCT

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING AU ! HUHl 1 Y

(PCT Rule 436/S.1)

Applicant's or agent's file reference

.see form PCT/lSA/220

Date of mailing

(day/month/year) see form PCT7ISA£10 (second sheet)

FOR FURTHER ACTION

See paragraph 2 below

International application No,
PCT/IL2005£)00139

International filing date (day/rnonthfyear)
04.02.2005

Priority date (day/month/year)
05.02.2004

international Patent Classification (IPC) or both national classification and IPC

A61H102, A63B23/12, A63B23/16, G09B11/00, G09B9AX)

Applicant

REABILITY INC.

Box No. VI
□ Box No. VII

1 . This opinion contains indications relating to the following items:

13 Box No. i Basis of the opinion

□ Box No. 11 Priority

E21 Box No. Ill Non-establishment of opinion with regard to novelty, inventive step and industrial applicability

□ Box No. IV Lack of unity of invention
Box No. V Reasoned statement under Rule 43b/s.1 (a)(i) with regard to novelty, inventive step or industrial

applicability; citations and explanations supporting such statement

Certain documents cited
Certain defects in the international application

□ Box No, VII! Certain observations on the international application

2. FURTHER ACTION

If a demand for international preliminary examination is made, this opinion will usually be considered to be a
written opinion of the international Preliminary Examining Authority ("I PEA"). However, this does not apply where
the applicant chooses an Authority other than this one to be the IPEA and the chosen IPEA has notifed the
International Bureau under Rule 66.1 Ws(b) that written opinions of this International Searching Authority
will not be so considered.

If this opinion is, as provided above, considered to be a written opinion of the IPEA, the applicant is invited to
submit to the I PEA a written reply together, where appropriate, with amendments 1 before the expiration of three
months from the date of mailing of Form PCT/1SA220 or before the expiration of 22 months from the priority date,
whichever expires later.

For further options, see Form PCTdSA/220.

3. For further details, see notes to Form PCT/IS A/220.

Name and mailing address of the ISA;

European Patent Office
D-80298 Munich

Tel. +49 89 2399 - 0 Tx: 523656 epmu d
Fax: +49 39 2399-4465

Authorized Officer

Fischer, E

TeEephone No. +49 S9 2399-7290

Form (PCTASA/237) (Cover Sheet) (January 2004)

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING AUTHORITY

International application No.
PCT/IL2005/000139

Box No. I Basis of the opinion .

1 . with regard to the ianguage, this opinion has been established on the basis of the International application in
the ianguage in which it was filed, unless otherwise indicated under this item.

□ This opinion has been established on the basis of a translation from the original language into the following
language , which is the language of a translation furnished for the purposes of international search
(under Rules 12.3 and 23.1(b)).

2. With regard to any nucleotide and/or amino acid sequence disclosed in the international application and
necessary to the claimed invention, this opinion has been established on the basis of:

a. type of material:

□ a sequence listing

□ table(s) related to the sequence listing

b. format of material:

□ in written format

□ in computer readable form

c. time of fiiingyfurnishing:

□ contained in the international application as filed.

□ filed together with the international application in computer readable form.

□ furnished subseauentlv to this Authority for the purposes of search.

3. □ In addition, in the case that more than one version or copy of a sequence listing and/or table relating thereto

has been filed or furnished, the required statements that the information in the subsequent or additional
copies is identical to that in the application as filed or does not go beyond the application as filed, as
appropriate, were furnished.

4. Additional comments:

Form PCTdS A/ 237 (January 2004)

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WRITTEN OPINION OF THE International application No.

INTERNATIONAL SEARCHING AUTHORITY PCT/1L2005«001 39

Box No. Ill Non-establishment of opinion with regard to novelty, inventive step and industrial
applicability

The questions whether the claimed invention appears to be novel, to involve an Inventive step (to be non
obvious), or to be industrially applicable have not been examined in respect of:

□ the entire international application,
El claims Nos. 30-36

because:

□ the said international application, or the said claims Nos. relate to the following subject matter which
does not require an international preliminary examination (specify):

□ the description, claims or drawings (indicate particular elements below) or said claims Nos. are so
unclear that no meaningful opinion could be formed (specify):

□ the claims, or said claims Nos. are so inadequately supported by the description that no meaningful opinion
could be formed.

no international search report has been established for the whole application or for said claims Nos. 30-36

□ the nucleotide and/br amino acid sequence listing does not comply with the standard provided for in Annex
C of the Administrative Instructions in that:

the written form □ has not been furnished

□ does not comply with the standard
the computer readable form □ has not been furnished

□ does not comply with the standard

□ the tables related to the nucleotide andtor amino acid sequence listing, if in computer readable form only, do
not comply with the technical requirements provided for in Annex C-bis of the Administrative instructions.

□ See separate sheet for further details

Form PCT/IS A/ 237 (January 2004)

>

WRITTEN OPINION OF THE International application No.

INTERNATIONAL SEARCHING AUTHORITY PCT/IL2005A)00139

Box No. V Reasoned statement under Rule 43b/s, 1(a)(1) with regard to novelty, inventive step or
industrial applicability; citations and explanations supporting such statement

1. Statement

Novelty (N)

Yes:

Claims

No:

Claims

1-29

Inventive step (IS)

Yes:

Claims

No:

Claims

1-29

Industrial applicability (lA)

Yes:

Claims

1-29

No:

Claims

2. Citations and explanations
see separate sheet

Box No. Vt Certain documents cited

1 . Certain published documents {Rules ASbisA and 70.10)
and / or

2. Non-written disclosures (Rules 43bisA and 70.9)
see form 210

Form PCT/tSA/ 237 {January 2004)

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WRITTEN OPINION OF THE international application No.

INTERNATIONAL SEARCHING

AUTHORITY (SEPARATE SHEET) PCT/1L2005/000139

Re item 111

Non-establishment of opinion with regard to novelty, inventive step and industrial
applicability

Claims 30-36 relate to subject-matter considered by this Authority to be covered by
the provisions of Rule 67.1 (iv) PCT, namely to methods for treatment of the human or
animai body by therapy. Consequently, no opinion will be formulated with respect to
novelty, inventive step and industrial applicability of the subject-matter of these claims
(Article 34(4)(a)(i), Rule 43bis.1 (b) PCT).

In particular, independent claims 30, 33 include medical treatment steps like using an
actuator to assist movement of an arm or of fingers of a person, the purpose and
inevitable effect being therapeutic, namely rehabilitation of lost limb control.

Re item V

Reasoned statement with regard to novelty, inventive step or industrial applicability;
citations and explanations supporting such statement

L Documents

Reference is made to the following documents:

U ! . ub-M-3 o»/ ooo,

D2: US-A-2002/064438;

D3: US-A-6 057 828;

D4: US-A-6 061 004;

D5: US-A-3 91 9 691 ;

D6: J P-A-2002 127058;

D7: JP-A-11 253504;

D8: WO-A-2004/050172.

H. Requirements of Article 6 PCT - Clarity

I . The formulation "fine motion mechanism ... adapted to apply sufficient force to move
the object" used in cfaim 1 is not clear, since the claim does not define any of those
parameters necessary to determine the force. For example: What kind of object is
used, how is the object held, how much force does the user apply, etc. ?

Form PCT/lSA/237 (Separate Sheet) (Sheet 1) (EPO-January 2004)

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WRITTEN OPINION OF THE International application No.

INTERNATIONAL SEARCHING

AUTHORITY (SEPARATE SHEET) PCT/1L2005/000139

2. The claims as a whole are not clear, since they attempt to define the invention in
terms of a result to be achieved, rather than defining the structural technical features
that are necessary to perform the stated functions (PCT international Search and
Preliminary Examination Guidelines 5.35): See e.g. claims 5-7, 18, 23.

3. According to independent claim 23 the apparatus comprises "a stylus extending
upwards from the surface, and a motion mechanism [being] located under the
surface' 1 . Thus, all embodiments according to Figs. 2, 3, 5 fall outside the subject-
matter covered by this claim (PCT International Search and Preliminary Examination
Guidelines 5.29).

111. Requirements of Article 33(2), (3) PCT - Novelty / Inventive step

1 . Document D1 discloses (see especially Figs. 1a, 1c, 1d) (the references in
parentheses applying to this document):

An apparatus for rehabilitation (the device of D1 is suitable for this intended use; see
e.g. column 2, lines 66, 67), comprising:

an object (120) adapted to be hand-held by a person and manipulated using the
fingers to perform a task; and

a fine motion mechanism : 70 3 184} couoled to said obiect and adaoted to aoplv

^ ^ - 3 j I - ' . . -

sufficient force to move the object (column 12, lines 24-28).

Since the subject-matter of independent claim 1 does not differ therefrom, it is not
novel (Article 33(2) PCT).

2. Claim 1 is formulated extremely broadly, see especialty:

-) "apparatus for rehabilitation": This formulation is to be construed as meaning
merely that the apparatus is suitable for this use (see also PCT International
Search and Preliminary Examination Guidelines item 5.23). In the context of the
present application, any device capable of applying a force to a limb sufficient to
assist movement of the limb can be regarded as suitable for such an intended
use,

~) "fine motion mechanism": This relative term has no well-recognised meaning
and thus cannot be used to delimit the claim from the prior art.

Form PCT/lSA/237 (Separate Sheet) (Sheet 2) (EPO- January 2004)

1
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WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING
AUTHORITY (SEPARATE SHEET)

International application No.

PCT/IL2005/000139

-) "obiect adaoted to be hand-held ... and manioulated usina the finaers": This

I J J I w

feature can be construed to relate to the object as such, or to the object as
coupled to the fine motion mechanism.

As a consequence, devices of different technical areas are novelty destroying (Art.
33(2) PCT):

-) D2, see embodiment according to Figs. 1 -3; see also embodiment according to
paragraph [0169].

-) D3-D5, see relevant passages cited in the search report: These devices not only
can be moved by the user, but also apply a force feedback to the user and
actively move the object held by the user.

-) D6, D7 disclosing rehabilitation devices for writing/eating that can be moved by a
user, and apply forces to assist the user, as well.

3. All additional and/or differing features of independent claim 23 compared to claim 1
likewise being known from D1 and D3, the subject-matter of this claim also lacks
novelty (Article 33(2) PCT).

-) D1 : The motion mechanism (170, 184) is located under the surface (1 05).
-) D3: See esp. Fig. 7.

4. Dependent claims 2-22, 24-29 do not contain any additional features which, in
combination with the features of any claim to which they refer, meet the requirements
of the PCT in respect of novelty and/or inventive step, since all additional features are
either explicitly disclosed in at least one of the documents D1 -D4 or just relate to
normal design procedures in this field (the references in parentheses applying to the
respective document) :

Claims 2-4: See e.g. D1 , Fig. 1 a; D6, Figs. 1 ,9; D7, Figs. 1,2.

Claims 5, 6, 14, 15, 26: See e.g. D1 , column 3, lines 9-1 1 , column 4, lines 22, 23;
D3, column 3, lines 58-60 3 column 18, lines 33, 34; D4, column 4, lines 5, 6,
column 43, lines 19-22; D6, paragraphs [0017], [0048]; D7, paragraph [0022],
force sensor (24).

Claims 7, 29: See e.g. D2, paragraph [0165]; D7, paragraph [0020]: shaking is
detected.

Form PCT/1SA/237 (Separate Sheet) (Sheet 3) (EPO-January 2004)

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING
AUTHORITY (SEPARATE SHEET)

International application No.

PCT/1L2OO5/O00139

Claim &, 9 5 27 s 28: See e.g. D1, column 3, lines 12-15: D6 5 paragraph [0017]: D7,
paragraph [0013].

Claims 10-12,16, 24, 25: See e.g. D1, Fig. 1c, Id, column 12, lines 24-28; D3, Fig.

7, column 4, line 8; D6, paragraphs [001 1], [0012], [0024]; D7, paragraphs

[0007], [0019], [0021], [0022].
Claim 13: See D1, column 3, lines 46-51; D4, column 5, lines 17-19.
Claims 17-20: See D2, paragraph [0169]; D3, Fig. 7; D4, Fig. 2; D6, Fig. 1 ; D7, Figs.

Claims 21 , 22: See esp. D1 , Fig. 1 a; D6, display (24).

Re item VI

Certain documents cited

Certain published documents

Application No
Patent No

Publication date
(day/month/year)

Filing date
{day/month/year}

Priority date (vaifd claim)
(day/month/year)

WO-A-2004/050172

17.06.2004

03.12.2003

04.12.2002;
02.12.2003

Form PCT/ISA/237 (Separate Sheet) (Sheet 4) (EPO-January 2004)